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Law360 Names Bob Van Nest Intellectual Property MVP


Robert Van Nest of Keker & Van Nest LLP led Google Inc. to a sweeping victory in a patent and copyright suit brought by Oracle Corp. and represented HTC Corp. in its recently-settled smartphone patent dispute with Apple Inc., earning him a spot on Law360's list of IP MVPs.

Oracle sought $6 billion in damages in the closely-watched case alleging that Google's Android smartphone operating system infringed its patents and copyrights by replicating the functionality of Oracle's Java software. Prior to trial in the Northern District of California, Van Nest got five of the seven patents asserted by Oracle ruled invalid by the U.S. Patent and Trademark Office.

He then represented Google in a two-phase trial in April and May, where the jury first found that Google infringed the Java application programming interfaces, or APIs, but could not determine whether Google's use of the programming language was fair use. The jury then found that Google had not infringed the two Oracle patents-in-suit.

In late May, the case ended in Google's favor when U.S. District Judge William Alsup ruled that the Java APIs are a system of operation that is not entitled to copyright protection, in the first-ever ruling addressing the copyrightability of APIs.

"The work was very demanding, but everyone was very satisfied with the result," Van Nest said of the trial.

The case established the legal rules for open source software development, and Van Nest successfully argued that a win for Oracle would transform APIs from the building blocks of software to a proprietary assets for which owners could seek a licensing fee. Google's victory will allow developers to use the Java language to design new software.

"The ruling is a great victory for open source and the idea that once you make APIs and code available, you can't take it back," Van Nest said. "The biggest point is that open source is going to be respected; no one owns it and everyone can use it."

Judge Alsup had done computer programming himself and requested numerous briefs on the software copyright issues, including very detailed fact questions about how Java and Android work. Van Nest said it was a challenge to write so much for the judge during the trial while at the same time presenting evidence and doing all the normal trial work, he said.

"It was as though we were having a very intense summary judgment hearing, a Markman hearing and a jury trial all at the same time," he said.

The case was also unique in that it was "tried in a fishbowl, where every word we spoke in court was reported in blogs and elsewhere," he said. Given the high degree of media attention, there was too much coverage of the trial for the attorneys working on the case to pay attention to it, he said.

"We knew we were in a fishbowl, but we tried not to look outside the bowl during the trial," he said.

In a case that generated nearly as much publicity, Van Nest defended HTC against Apple's claims that its smartphones infringed numerous patents. The two companies reached a settlement in November.

Apple's 2010 suit against HTC, filed at the U.S. International Trade Commission, was the first case filed in the smartphone wars that have since ensnarled many other companies. Apple also filed several district court cases against HTC, but most were stayed in favor of the ITC case.

Van Nest said the case illustrates how difficult it is for a patent holder to use the patent system to keep a product off the market, he said. Apple asserted 10 patents against HTC and one was found to be infringed, but HTC designed around it and its products were never off the market.

"If the goal is to keep competitors of the market, it's tough to do even with the vigorous patent system we have," he said.

Keker & Van Nest worked with Quinn Emanuel Urquhart & Sullivan LLP and Perkins Coie LLP in representing HTC against Apple's suits, which involved numerous patents.

"It was a real challenge because there were so many different patents asserted and so many different claims," he said. "Putting together a team to deal with all of them was really daunting."

Also in 2012, Van Nest represented Broadcom Corp. in a suit over wireless products by the Commonwealth Scientific & Industrial Research Organisation Australia's national science agency, which settled favorably on the eve of trial in the Eastern District of Texas.

"We practice in a wide range of areas and wide range of companies and technologies," Van Nest said. "We're not just bracketed into one small patent niche, and I'm really proud of our group of clients."